Lucy Greetham et al.

Patent Trials and Appeals Board

May 13, 2020

14336455 - (D) (P.T.A.B. May. 13, 2020)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
14/336,455 07/21/2014 Lucy Greetham 225525.67 8678
27162 7590 05/13/2020
CARELLA, BYRNE, CECCHI, OLSTEIN, BRODY & AGNELLO
5 BECKER FARM ROAD
ROSELAND, NJ 07068
EXAMINER
PYLA, EVELYN Y
ART UNIT PAPER NUMBER
1633
MAIL DATE DELIVERY MODE
05/13/2020 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte LUCY GREETHAM, GAVIN R. MCINTYRE, EBEN BAYER,
JACOB WINISKI, and SARAH ARALDI
____________

Appeal 2020-000325
Application 14/336,455
Technology Center 1600
____________

Before JEFFREY N. FREDMAN, ULRIKE W. JENKS, and
JOHN G. NEW, Administrative Patent Judges.

Opinion for the Board filed by Administrative Patent Judge JENKS.

Dissenting Opinion filed by Administrative Patent Judge FREDMAN.

JENKS, Administrative Patent Judge.

DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from Examiner’s
decision to reject claims 2–7, 9–14, and 16–23 as obvious. We have
jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42(a). Appellant identifies the real party in interest as
Ecovative Design LLC. Appeal Br. 1.
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STATEMENT OF THE CASE
Claims 2–7, 9–14, and 16–23 are on appeal, and can be found in the
Claims Appendix of the Appeal Brief. Claim 2, reproduced below, is
illustrative of the claimed subject matter:
Claim 2. A process of growing a mycological biopolymer
material, the steps of
providing a tool defining a cavity therein with an opening
into said cavity;
packing said cavity of the tool with nutritive substrate and
a fungus;
placing a lid on said tool to cover said cavity, said lid
having only one outlet therein defining a void space open to fresh
air;
allowing said fungus to grow mycelium within said cavity
and to allow the mycelium to respirate within said cavity thereby
producing carbon dioxide while colonizing the nutritive
substrate;
allowing the produced carbon dioxide to diffuse out of said
outlet in said lid to create a gradient of carbon dioxide; and
allowing the mycelium to grow along said gradient to fill
said void space without producing a stipe, cap or spore therein
and to produce a mycelium biopolymer in said void space.
Appeal Br. Claims Appendix.
The other independent claims, claims 7, 16, and 18, similarly recite a
“mycological biopolymer.” Id.

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REFERENCES
The prior art relied upon by Examiner is:
Name Reference Date
Beelman et al.
(“Beelman”)
US 5,681,738 October 28, 1997
Lüth et al. (“Lüth”) US 6,620,614 B1 September 16, 2003
Bayer et al.
(“Bayer ’302”)
US 2012/0270302 A1 October 25, 2012
Bayer et al.
(“Bayer ’577”)
US 2008/0145577 A1 June 19, 2008
Kalisz et al. (“Kalisz”) US 2011/0269214 A1 November 3, 2011
Instructables, How to Grow Oyster Mushroom Spawn (Low Tech), Feb
15, 2011 (available at https://www.instructables.com/id/1-How-to-Grow-
Oyster-Mushrooms-Low-Tech/) (“Instructables”)
F. Zadrazil, Influence of CO2 Concentration on the Mycelium Growth of
Three Pleurotus Species, 1 Eur. J Appl. Microbiol. 327 (1975)
(“Zadrazil”)
REJECTIONS
Appellant requests review of the following grounds of rejection made
by Examiner:
I. Claims 2–6 and 18–23 under 35 U.S.C. § 103(a) as
unpatentable over Instructables in view of Kalisz.
II. Claim 17 under 35 U.S.C. § 103(a) as unpatentable over
Instructables in view of Kalisz as applied to claims 2–6 and further in
view of Lüth.
III. Claims 7 and 9 under 35 U.S.C. § 103(a) as unpatentable over
Instructables in view of Kalisz and further in view of Bayer ’302.
IV. Claims 10 and 11 under 35 U.S.C. § 103(a) as unpatentable
over Instructables in view of Kalisz, and further in view of Bayer ’302 as
applied to claims 7 and 9, and further in view of Beelman.
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V. Claims 12–14 under 35 U.S.C. § 103(a) as unpatentable over
Instructables, in view of Kalisz, and further in view of Bayer ’302 as
applied to claims 7 and 9, and further in view of Bayer ’577.
VI. Claim 16 under 35 U.S.C. § 103(a) as unpatentable over Bayer
’577 in view of Zadrazil.

I.–V. Obviousness over Instructables and Kalisz
The issue of this appeal is whether the preponderance of evidence of
record supports Examiner’s conclusion that the claims are obvious over the
teachings of the combination of Instructables and Kalisz. Because the same
issue is dispositive for rejections I.–V., we consider the rejections together.
Findings of Fact
FF1. Instructables2 teaches the propagation of oyster mushroom spawn of
varieties of Pleurotus ostreatus and Pleurotus pulmonarius. See
Instructables 1–2 (“This instructable describes how to propagate
oyster mushroom spawn via grain spawn transfer, agar tissue culture
transfer and liquid inoculation methods.”).
FF2. Instructables teaches obtaining lidded jars and drilling 8mm holes in
the lids to permit the mushroom spawn to breathe. See Instructables 5
(“we used 1 liter olive jars . . . [t]aking a drill, make an 8mm hole in
each jar lid. Later, this will allow the mushroom spawn to breath
[sic].”).
FF3. Instructables teaches soaking grain and filling the prepared jars ¾ full
before the lid is applied. See Instructables 6 (“[s]oak the grain for 24

2 Instructables is not paginated, therefore page numbers refer to the
document as if it were consecutively paginated beginning on the first page.
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hours . . . . Lit[er] jars should be ¾ filled with grain and lids (with
breathing holes) fitted . . .”).
FF4. Instructables teaches inoculating the grain-filled jars with mushroom
spawn, plugging the hole with cotton, and incubating the jars at
temperatures of between 75–85°F. See Instructables 7–8 (“[t]ransfer
1–2 desert spoons of the spawn into your 1 lit[er] jar of sterile grain
. . . for [P]leurotus ostreatus incubate at 24°C (75°F) and for
[P]leurotus pulmonarius (summer) 24°C to 30°C (75°F to 85°F).”).
FF5. Instructables teaches that the jars should be incubated for up to 10
days to permit the growth of fungal mycelium. See Instructables 13
(“you should notice popcorn sized colonization evenly spread
throughout the grain after 1-2 days. If needed, give the jars a shake to
evenly distribute the mycelium to aid colonisation. Once the
mycelium is relatively uniform throughout the jar, leave it to incubate.
The grain should be fully colonized with mycelium in seven to ten
days.”).
FF6. Instructables teaches that the colonized grain can be used to inoculate
additional jars or used to grow mushrooms. See Instructables 13
(“[o]nce the jar is fully colonized, you can use it to inoculate more
jars, or store it at low temperatures until needed and of course you can
use it to inoculate straw substrate to grow mushrooms.”).
FF7. Kalisz teaches growing fungal mycelium into an aggregate used for,
among others, injection molding procedures. See Kalisz ¶ 71 (“a
particulate additive . . . is incorporated into the liquid aggregate . . .
with the fungal inoculum . . . to form a slurry . . . . The slurry . . .
grows into live mycelium.”), ¶ 73 (“As the hyphae grow . . ., they will
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grow through and around the nutrients of the aggregate and the
polymer particles, forming bonds with the particles which will remain
in the final plasticized structure.”).
FF8. Kalisz teaches that fungi breathe oxygen and produce carbon dioxide.
See Kalisz ¶ 88 (“Unlike photosynthetic plants, fungi breathe in
oxygen and release carbon dioxide.”).
FF9. The Specification discloses that a “mycological biopolymer” is “a
material composed entirely of fungal mycelium,” distinguishing
between the “mycological biopolymer” and “mycological
biocomposites which are comprised of lignocellulosic waste materials,
fungal cellular tissue, and potentially supplemental nutrients
(minerals, vitamins, and the like).” See Spec. 2:1–8.

Principle of Law
“[O]bviousness requires a suggestion of all limitations in a claim.”
CFMT, Inc. v. Yieldup Int’l Corp., 349 F.3d 1333, 1342 (Fed. Cir. 2003)
(citing In re Royka, 490 F.2d 981, 985 (CCPA 1974)).

Analysis
Examiner finds that Instructables teaches providing a tool, i.e., a jar,
with a cavity, filling the cavity in the tool with a nutritive substance
inoculated by a fungus, then covering the cavity with a lid provided with a
single hole. See Ans. 4–11; FF1–FF4. Examiner finds incubating the tool
from Instructables permit the growth of fungal mycelium. Ans. 4; FF5.
Examiner finds that as the fungus grows, it consumes oxygen and emits
carbon dioxide, and the hole provided in the lid of the jar allows the growing
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fungus to breathe. Ans. 5; FF2, FF8. Examiner finds that Instructables
describes permitting the fungal mycelium that colonized the nutritive
substance to be removed to then either inoculate additional jars, or permit
the growth of mushrooms. FF6. Examiner finds that Kalisz teaches forming
aggregates of mycelium and particulate materials for further processing such
as for use in forming molded objects. Ans. 6–7; FF7. Examiner reasons that
because “Instructables carries out the same method steps as in the instant
application . . . any and all results of the method of Instructables, whether
recognized at the time of filing or not, were inherently achieved.” Ans. 6.
Additionally, Examiner finds that the claims are not limited to the
production of a composition containing just fungal mycelium. See Ans. 27
(“it is noted the instant claims are not limited to producing a final product
that comprises only fungal mycelium”). Examiner finds that nothing of the
art would prevent the fungal mycelium cultured by Instructables from
growing into the space between the nutritive substance and the lid of the
container. Id. at 28 (“there is nothing in the cultivation jar of Instructables
that would impede the growth of the mycelium . . . Kalisz provides the
extrinsic evidence that the 10 day culture of Instructables would necessarily
result in a portion of mycelium growth into the one outlet in the jar lid.”).
Appellant contends that a description of the claimed formation of a
“mycological biopolymer material” is absent from the teachings of
Instructables or Kalisz. Appeal Br. 7–9, 12–14. Appellant contends that
nothing in the Instructables or Kalisz references teaches or suggests to a
skilled artisan the formation of the mycological biopolymer material
encompassed by the instant claims. See Appeal Br. 7 (“Examiner
acknowledges that Instructables is directed to a process of growing oyster
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mushroom spawn but does not present any evidence that oyster mushroom
spawn is a mycological biopolymer material, i.e., a material composed
entirely of fungal mycelium” (emphasis removed)). Appellant further
distinguishes the mycological biopolymer claimed from the products formed
by Instructables by again pointing out that, per the teachings of Instructables,
a mycological biopolymer according to the instant claims is not formed. Id.
at 9 (“the jars illustrated in Step 9 show mycelium (in white) distributed
throughout the grain to produce an amalgam of mycelium and grain”).
Appellant contends that Examiner’s position that given enough time the
mycelium of Instructables would occupy the void space in the jar is
unsupported by evidence, because Instructables teaches the “[full]
colonization” of the contents of the jars by day ten. Id. at 12–13. Appellant
indicates Instructables fails to demonstrate that after the “full colonization”
of the contents of the Instructables jar, any mycelium has grown beyond the
level of substrate in the jars. Id. at 13.
We begin with claim construction of the terms “mycological
biopolymer” and “mycelium biopolymer” giving the claims their broadest
reasonable interpretation consistent with the Specification. In re Hyatt, 211
F.3d 1367, 1372 (Fed. Cir. 2000). The Specification defines “mycological
biopolymer” as “a material composed entirely of fungal mycelium.” FF9.
The Specification states that the claimed “mycological biopolymer” differs
from “mycological biocomposites which are comprised of lignocellulosic
waste materials, fungal cellular tissue, and potentially supplemental nutrients
(minerals, vitamins, and the like).” FF9. Accordingly, we find that a
“mycological biopolymer” is made solely of mycelium.
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According to the Specification, the “mycelium biopolymer” limitation
found in claim 2 is also reasonably interpreted to be a product comprised
solely of mycelium. “[T]he use of [two similar but different] terms in close
proximity in the same claim gives rise to an inference that a different
meaning should be assigned to each . . . . That inference, however, is not
conclusive; it is not unknown for different words to be used to express
similar concepts, even though it may be poor drafting practice.” Bancorp
Servs., L.L.C. v. Hartford Life Ins. Co., 359 F.3d 1367, 1373 (Fed. Cir.
2004) (citing Ethicon Endo-Surgery, Inc. v. U.S. Surgical Corp., 93 F.3d
1572, 1579 (Fed. Cir. 1996).
Here, there is no indication in the Specification that “mycological
biopolymer” and “mycelium biopolymer” have a different meaning. The
Specification teaches that the tool space is filled “with an undifferentiated
mycelium chitin-polymer, which is subsequently extracted.” Spec. 3. The
Specification further describes producing a mycelium product by placing the
void space of the tool to be filled with biopolymer on top of the substrate or
to the side of the substrate, creating either vertical mycelium or horizontal
mycelium biopolymer. See Spec. 11–12. The Specification also describes
that, after incubation, the substrate is removed from the biopolymer material.
See id. at 10 (“extracting the biopolymer material from the nutritious
substrate base in the tool, for example, using a blade”), see id. at 13 (“Prior
to the completion of the growth the grid can be removed to permit the
mycelium to conjoin with the adjacent tissues.”). Finally, the Specification
describes using a hydroponic system for the production of the biopolymer.
Id. at 13. Based on these disclosures in the Specification, we find that the
claimed “mycelium biopolymer” is equivalent to the “mycological
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biopolymer” and, therefore, is reasonably interpreted to be composed solely
of mycelium.
We agree with Appellant that the Specification has expressly defined
what is encompassed by a “mycological biopolymer,” specifically, that it is
material composed entirely of fungal mycelium. See Appeal Br. 8; FF9
(indicating that “mycological biopolymer” is defined as “a material
composed entirely of fungal mycelium.”). We find that both Instructables
and Kalisz describe methods directed to the formation mycological
biocomposites, the kind of aggregate the Specification excludes from the
limitations of “mycological biopolymers” or “mycelium biopolymer” as
recited in the instant claims. See FF5, FF7. Furthermore, we find that
nothing of the cited art suggests that mycelium grown as a result of
inoculating either the grain materials of Instructables or the
nutrient/particulate slurry of Kalisz would provide a “material composed
entirely of fungal mycelium” produced by the processes described in
Instructables and Kalisz.
Instructables describes the process as providing “popcorn sized
colonization evenly spread throughout the grain,” which “is relatively
uniform throughout the jar,” providing grain which “should be fully
colonized with mycelium in seven to ten days.” FF5. This description of the
material produced by Instructables reflects the type of mycological
biocomposite which fall outside the metes and bounds of the instant claims.
FF5–FF6.
The teachings of Kalisz relied upon by Examiner fails to cure this
deficiency, because Kalisz teaches that the product of fungal growth is an
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“aggregate” which “fully and evenly incorporate[s] the polymer particles
into the resulting structure.” Kalisz ¶ 73; FF7.
We agree with Appellant, and are not persuaded by Examiner’s
position that given enough time the mycelium of Instructables would occupy
the void space in the jar and thereby meet the claimed “mycological
biopolymer” or “mycelium biopolymer” limitation as claimed. See Appeal
Br. 29 (“that there is nothing in the cultivation jar of Instructables that would
impede the growth of the mycelium into the opening in the lid and Kalisz . . .
that after a certain period of time the mycelium grows into the closed growth
cavity and fills all the voids and corners of the closed container.”).
The Specification describes producing mycelium product by placing
the void space of the tool to be filled with biopolymer on top of or beside the
substrate. See Spec. 11–12. The void space as claimed is the space defined
by the walls and the lid that form the cavity of the tool. Examiner identifies
the 1 liter wide mouth jars of Instructables as meeting the limitation of the
tool. See Ans. 4. Even if, as Examiner suggests, the mycelium in
Instructables and Kalisz can grow into air pockets making up a portion of
the tool cavity, the remainder of the cavity still contains grains. In other
words, any product retrieved from the tool cavity will not be a mycological
biopolymer because it also contains lignocellulosic waste materials. See FF9.
Therefore, we are not persuaded by Examiner’s position that growth of
mycelium into the air pockets disclosed in Instructables and Kalisz meets the
“mycological biopolymer” production as claimed.
We conclude that the preponderance of the evidence of record does
not support Examiner’s conclusion that the combination of Instructables and
Kalisz discloses a “mycological biopolymer” as recited in independent
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claims 2, 7, and 18 and dependent claims thereto. We thus reverse all the
rejections under 35 U.S.C. § 103(a) that rely on the teachings of
Instructables and Kalisz.

VI. Obviousness over Bayer ’577 and Zadrazil.
The issue is whether the preponderance of evidence of record supports
Examiner’s conclusion that combination of Bayer ’577 and Zadrazil renders
the “mycological biopolymer” as recited in claim 16 obvious.

Findings of Fact
FF10. Bayer ’577 describes a 3-dimensional digestible or non-digestible
framework for supporting the growth of fungal mycelia. Bayer ’577
¶ 206 (“[o]ne way of adding an engineered structure to mycelium
composites is to produce a digestible or non-digestible 3-d framework
within which the mycelium grows.”)
FF11. Bayer ’577 describes plastic grids coated with nutritional substrate
which is placed on a bed of inoculum and incubated to grow
mycelium. Id. ¶¶ 210–11 (“a three-dimensional lattice, formed of sets
of 1 mmx1 mm plastic grids . . . oriented orthogonally, is coated in a
mixtures of starch and water . . . [and] placed on in a bed of inoculum
containing Pleurotus ostreatus on a suitable nutrient carrier . . . held at
the correct temperature, between 55-95 degrees Fahrenheit . . . to
stimulate mycelial growth.”).
FF12. Bayer ’577 describes the formation of a dense mat incorporating the
plastic grid. Id. ¶ 213 (“The mycelium is grown over and through the
grid producing a dense network of oriented hyphae. Overtime, the
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hyphae will interweave producing a dense 3-D mat. After 1 to 2
weeks of growth, the grid is removed from the incubator and dried.”).
FF13. Zadrazil describes the beneficial effect increased air CO2
concentrations have on fungal growth. Zadrazil 327 (“Increased CO2
concentrations in the air has a positive effect on mycelium growth in
the cultivation of Pleurotus ostreatus . . .”).
FF14. Zadrazil indicates that CO2 concentrations as low as 5% promote this
effect. Id. at 330 (“Table 1”).
FF15. Zadrazil describes not only the fungal growth promoting effects of the
elevated CO2 concentrations, but indicates that such increased CO2
concentrations inhibit the growth of contaminants. Id. at 333 (“The
high concentration of CO2 in the substratum not only has a stimulating
effect on the mycelium growth of the Pleurotus species but also an
inhibitive effect on other species in the non-sterile straw
substratum.”).

Analysis
Examiner finds that Bayer ’577 teaches placing a coated plastic grid
on a fungus-inoculated nutrient bed and incubating the combination under
conditions of controlled temperature and humidity to permit fungal
mycelium to grow through the grid holes and form a dense mat of fungal
mycelium encasing the plastic grid. See Ans. 23–25; FF10–FF12. Examiner
acknowledges that Bayer ’577 does not teach the recited CO2 concentrations.
Ans. 25. Examiner finds that Zadrazil establishes CO2 concentrations, falling
within the range of CO2 concentrations claimed, to promote fungal mycelial
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growth while inhibiting the growth of contaminant organisms. Ans. 25;
FF13–FF15.
Appellant argues that the lattice grid described by Bayer ’577 does not
have “a pair of vertically disposed chambers and a vertically disposed wall
separating said chambers” as required by claim 16. Appeal Br. 28. Appellant
further contends that “[t]here is no disclosure in Bayer ’577 of filling any
chamber with a bed of inoculum containing Plearotus ostreatus on a suitable
nutrient carrier,” nor a suggestion of passing liquid nutrient through the
substrate while air is circulated through the adjoining chamber to permit the
growth of a mycological biopolymer according to the instant claims. Id.
(emphasis added; boldface omitted).
Examiner responds that the lattice structure described by the figures of
Bayer ’577 represent only a cutaway portion of the entire enclosed structure,
thereby defining a number of vertically disposed chambers. Ans. 36–37.
Examiner further explains that Bayer ’577’s teaching concerning placing
substrate and fungal inoculant in one chamber permits the inoculation and
subsequent fungal growth through the lattice into adjacent chambers, and
that “humidified air” represents a “liquid nutrient” as required by the instant
claims. Id. at 37.
On the basis of this record, we find Appellant has the better position.
As indicated above, the Specification states that “the invention provides a
material composed entirely of fungal mycelium, herein referred to as
‘mycological biopolymer.’” Spec. 2:1–2; FF9. Bayer explicitly teaches that
its fungal mycelium-encased plastic lattice incorporates materials in addition
to the fungal mycelium. FF12 (“mycelium is grown over and through the
grid producing a dense network of oriented hyphae . . . the grid is removed
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from the incubator and dried”). Because “mycological biopolymer” is “a
material composed entirely of fungal mycelium” and does not include
incorporations of lignocellulosic waste materials, Bayer ’577’s method of
producing mycological biocomposites does not meet the claimed process.
Accordingly, we reverse of the rejection of claim 16 under 35 U.S.C.
§ 103(a) as unpatentable over Bayer ’577 and Zadrazil.

DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
2–6, 18–23 103 Instructables,
Kalisz
2–6, 18–23
17 103 Instructables,
Kalisz, Lüth
17
7, 9 103 Instructables,
Kalisz, Bayer ’302
7, 9
10, 11 103 Instructables,
Bayer ’302, Kalisz,
Beelman
10, 11
12–14 102 Instructables,
Kalisz, Bayer ’302,
Bayer ’577
12–14
16 103 Bayer ’577,
Zadrazil
16
Overall
Outcome
2–7, 9–14,
16–23

REVERSED

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FREDMAN, Administrative Patent Judge, dissenting.

I respectfully dissent from the Majority’s opinion.
Claim 2 is drawn to a process of growing a mycological biopolymer
material with steps of providing an object with a cavity, packing the cavity
with nutritive substance and fungus, covering the object with a lid, allowing
the fungus to grow mycelium and respirate carbon dioxide, having a hole in
the lid to allow the diffusion of the carbon dioxide from the lidded object,
and having a void space with mycelium but not with stipe, cap, or spores.
I agree with the interpretation of the Majority that a mycological
biopolymer is reasonably understood as being solely comprised of
mycelium.
I recognize the Examiner has the burden of providing reasonable
proof that a claim limitation is an inherent characteristic of the prior art. In
re Best, 562 F.2d 1252, 1254–55 (CCPA 1977). The Examiner meets this
“burden of production by ‘adequately explain[ing] the shortcomings it
perceives so that the applicant is properly notified and able to respond.’” In
re Jung, 637 F.3d 1356, 1362 (Fed. Cir. 2011) (quoting Hyatt v. Dudas, 492
F.3d 1365, 1370 (Fed. Cir. 2007)). The burden of proof then shifts to the
applicant “to prove that the subject matter shown to be in the prior art does
not possess the characteristic relied on.” Best, 562 F.2d at 1254–55.
Whether the rejection is based on “inherency” under 35
U.S.C. § 102, on “prima facie obviousness” under 35 U.S.C.
§ 103, jointly or alternatively, the burden of proof is the
same, and its fairness is evidenced by the PTO’s inability to
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manufacture products or to obtain and compare prior art
products.

Best, 562 F.2d at 1255.
I disagree with the Majority’s finding that the Instructables
disclosures fails to render the claims obvious. As the Majority’s fact finding
shows, the Instructables reference expressly teaches all of the recitations of
claim 2 other than “the mycelium of Instructables would occupy the void
space in the jar” (FF1–6; Dec. supra).
However, the Examiner finds that “there is nothing in the cultivation
jar of Instructables that would impede the growth of the mycelium into the
void space” and that Kalisz evidences that “after a certain period of time the
mycelium grows into the closed growth cavity and fills all the voids” (Final
Rej. 7) (emphasis omitted).
Appellant contends that the “photos of step 9 of Instructables that
show complete colonization of all the jars with the level of the contents well
below the lids, i.e. no showing of mycelium above the level of the contents
or in the lids” (Appeal Br. 13).
I find this argument unpersuasive because there are photos of step 9
that clearly show a virtually complete filling of the void space with
mycelium material. The image below is reproduced from step 9 of the
Instructables reference:
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This image from step 9 of the Instructables reference shows white mycelium
material throughout the entire jars after inspection and reasonably
demonstrates that at least some mycelium inherently and necessarily grew
into the void space without containing either the nutrient material, stipe, cap,
or spore materials.
Appellant also contends that “the photos of step 9 belie the
Examiner’s position that given enough time, the mycelium would fill the
void space created by the one outlet in the jar lid of Instructables” (Appeal
Br. 13) (emphasis omitted).
I find this argument, without evidence, unpersuasive. Appellant
provides no rebuttal evidence disputing this fact or otherwise demonstrating
that a composition solely composed of mycelium was not, and would not be,
necessarily present in the void in the Instructables jars. “[A]ttorney
argument [is] not the kind of factual evidence that is required to rebut a
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prima facie case of obviousness.” In re Geisler, 116 F.3d 1465, 1470 (Fed.
Cir. 1997).
Appellant contends that “Instructables does not disclose growing
mycelium through the lids” (Appeal Br. 14).
I find this argument unpersuasive because claim 2 does not require
growth of the mycelium through the lids but solely requires “allowing the
mycelium to grow along said gradient to fill said void.” See In re Self, 671
F.2d 1344, 1348 (CCPA 1982) (“[A]ppellant’s arguments fail from the
outset because . . . they are not based on limitations appearing in the
claims.”).
Thus, in my view, the Examiner has reasonably provided evidence
that performance of the method of Instructables would inherently result in a
composition solely composed of mycelium in the void space of the jars. For
these reasons, I respectfully dissent from the Majority’s obviousness
analysis as to the Instructables and Kalisz rejection.